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Judgment
At the hearing, the appellants were represented by Ms. Gladys Daniel, Advocate and the respondents were represented by Mr. Ashok Kumar J
Daga, Advocate of M/s. Daga & Daga. Ms. Gladys Daniel, the learned counsel for the appellants submitted that the Assistant Registrar of Trad
Marks had disallowed their opposition mainly on the ground that their good and the goods of the respondents were different and also that the
appellants had not established their reputation and use of their goods in India. The main contention of the learned counsel for the appellants is that the
registration of the respondents' mark ‘TUFFLON’ is contrary to Sections 12(1) and 11(a) of the Trade & Merchandise Marks Act, 1958. S
submitted that the appellants are the proprietors of the registered Trade Mark ‘TEFLON’ and that they had obtained registration of their mar
in India in different classes. She referred to a list of their registration in India under different classes, which are as follows:â€"",,,,
Sl. No.,Registration No.,Date,Class,Goods
1.,237465,8/9/1996,,"Plastics in the form of sheet, rods, tubes etc.
2.,242147,16/5/1967,2,Refinous coating solutions and emulsions to impart non stick finish to metallic surfaces
3.,242148,16/5/1967,21,Cooking utensils etc
4.,258487,31/7/1969,1,Resinous moulding powders
5.,413912,2/12/1983,21,Cookware etc
6.,423279,16/6/1984,4,Dry and wet lubricants
7.,413908,2/12/1983,11,Electric cookware
8.,470880,15/4/1987,1,Adhesive tapes for industrial use
9.,470881,15/4/1987,24,Fibre glass cloth
Next, we would take up the objection under Section 11(a), which reads as follows:â€"",,,,
Prohibition of registration of certain marks-A markâ€",,,,
(a) the use of which would be likely to deceive or cause confusion;,,,,
The counsel for the appellants in her submission under Section 11(a) mainly relied on the transborder reputation of their trade mark ‘TEFLON’.,,,,
She contended that the appellants have to submit proof of transborder reputation of their trade mark only and that it is not necessary that the mark has,,,,
to be used in India to prove reputation. She pointed out that the Indian courts have upheld the transborder reputation of well known Trade Marks. She,,,,
relied on the following case laws relating to foreign trade marks like Volvo, Whirlpool, Phillips, 7 O'Clock, Caterpillar, Mercedes Benz, etc., in support",,,,
of her contention:â€",,,,
1998 (Suppl) ARB LR 627 (DB) (VOLVO mark),,,,
1998 PTC 415 (Del) (WHIRLPOOL mark),,,,
1998 PTC-1 Div. Bench Bombay (7'O CLOCK mark),,,,
AIR 1983 Punjab & Haryana (PHILIPS mark),,,,
AIR 1994 Del 237 (BENZ mark),,,,
(1998) IPLR 326 Mad(DB) (CATERPILLER mark),,,,
She submitted that in view of the fact that the principle of transborder reputation has been recognized by Indian courts, the respondents' marks should",,,,
not be registration as the appellants' mark ‘TEFLON’ has transborder reputation and is a well known mark. She also submitted that the use of,,,,
their trade mark by the respondents even for different goods would cause confusion and deception in the minds of the public as to the origin of the,,,,
goods.,,,,
In reply, Mr. Ashok Kumar J. Daga, the learned counsel for the respondents contended that at the opposition stage itself, the appellants had not",,,,
adduced any evidence regarding their reputation and sale of their goods in India. He referred to the case laws relied upon by the counsel for the,,,,
appellants and submitted that the trade mark referred to by her were well known trade marks, whereas the appellants' trade mark ‘TEFLON’",,,,
cannot be considered to be a well known trade mark as the appellants have not adduced sufficient evidence in support of their contention that their,,,,
mark is a well known trade mark in India. He referred to BATA case decided by the Calcutta High Court, wherein the Court refused to restrain the",,,,
defendant by an interlocutory injunction from using the mark BATA in respect of lungies etc. (Rustom Ali v. Bata Shoe Company, AIR 1957 Calcutta",,,,
127). He also referred to the decision of the Bombay High Court in SONY case, where the court held that the mark SONY for nail polish can be",,,,
registered as the petitioner SONY KABUSHIKI Kaisha, Japan has registered their trade mark SONY mainly for electronic goods and that the rival",,,,
goods are different (AIR 1985 Bom 327 : 1985-86 (10) IPLR 406). The counsel for the respondents also referred to Vol. 3 page 2474 of the book,,,,
‘Cases and Materials on Trade Marks and Allied Laws’ and contended that the appellants has to establish by evidence that their mark has,,,,
acquired reputation by use in India.,,,,
The various case laws cited by the counsel for the appellants lays down the principle of transborder reputation relating to well known trade marks.,,,,
However, each trade mark is unique and each case has to be decided on the basis of the evidences filed in support of reputation of the mark.",,,,
Reputation is based on facts. The question to be decided is whether the appellants' foreign reputation, if any, has reached India and that they have",,,,
established their presence in India. Furthermore, the cases cited by the Counsel for the appellants relate to grant of injunctions by way of interim",,,,
orders only and the result of the main suit is not brought to our notice. The counsel for appellants has based her argument that their mark is a well,,,,
known trade mark. The Trade & Merchandise Marks Act, 1958 has not specifically defined the term ‘well known trade mark’. However, the",,,,
Trade Marks Act, 1999 has provided for protection of well known trade marks under Section 11.",,,,
The facts to be considered for determining whether a trade mark is a well known trade mark, is provided in Section 11(6) of the Trade Marks",,,,
Act, 1999.",,,,
Section 11(6) reads as follows:â€",,,,
The Registrar shall, while determining whether a trade mark is a well known trade mark takes into account any fact which he considered relevant for",,,,
determining a trade mark as a well known trade mark includingâ€",,,,
(i) the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion,,,,
of the trade mark;,,,,
(ii) the duration extent and geographical area of any use of that trade mark;,,,,
(iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or",,,,
exhibitions of the goods or services to which the trade mark applies;,,,,
(iv) the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent they,,,,
reflect the use or recognition of the trade mark;,,,,
(v) the record of successful enforcement of the rights in that trade mark, in particular, the extent to which the trade mark has been recognised as a",,,,
well known trade mark by any Court or Registrar under that record.,,,,
The Tribunal has to adjudge whether the use of the mark applied for is likely to cause confusion in the minds of the consumers. The reputation in,,,,
its practical meaning is the knowledge of the mark in the relevant section of the public in India. This knowledge can occur either by the use of the,,,,
mark in India or by its publicity in India.,,,,
The appellants have not adduced any evidence of the use of their trade mark ‘TEFLON’ in India. They had also virtually accepted that,,,,
their mark had not been used in India. No doubt they have filed details of foreign countries where they have registered their trade mark,,,,
‘TEFLON’ and advertisement expenses for the period 1966 to 1984 incurred by them for advertisements outside India and sales figures for,,,,
their goods in foreign countries bearing the trademark ‘TEFLON’ for the period 1966 to 1985.,,,,
The appellants have also filed copies of a few advertisements pertains to the goods bearing the trade mark. Merely filing a few set of documents,,,,
like foreign sales and advertisement expenses do not go to prove that their mark has reputation in India. They have not adduced sufficient evidence in,,,,
support of their reputation by promotion of their mark in India either through advertising and publicity, presentations at fairs and exhibitions,",,,,
newspapers, sports sponsorship, journals, magazines etc. The relevant section of the public in this case are the tailors and manufacturers of garments,",,,,
handbags, soft luggages etc, who use zip fasteners. No evidence from them to prove reputation of the appellants' mark in India has been adduced. The",,,,
appellants have to file substantial evidence in support of their contention that their mark is a well known mark in India. As they have failed in this,,,,
matter, we are of the view that the appellants have not established the reputation of their mark in India either by use or publicity.",,,,
Regarding Section 18(1), the counsel for the appellants contended that the respondents have not honestly adopted the mark and that they have",,,,
copied their trade mark. In reply, the counsel for the respondents submitted that they were not aware of the appellants' mark and that they have",,,,
adopted and coined the trade mark ‘TUFFLON’ from the words ‘TUFF’ and ‘NYLON’. No doubt, that the appellants cannot",,,,
claim monopoly for the trade mark ‘TEFLON’ in respect of all classes just because they had registered their mark in India in a few classes. As,,,,
the goods are zip fasteners, which are generally made of plastics, we are inclined to accept the explanation offered by the respondents regarding",,,,
adoption of the mark.,,,,
Taking into consideration the above, we therefore, dismiss the appeal. There is no order for costs.",,,,